IMPORTANT POINTS
Proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trade mark in respect of certain goods falling under the same class.
Judgment of coordinate Bench attaining finality would act as estoppel between the parties in subsequent proceedings.

JUDGMENT :

A.K. Sikri, J.

The judgment dated 2nd December, 2014 given by the High Court of Karnataka in writ petitions filed by the appellant herein is the subject matter of detailed debate and arguments in the present proceedings, because of the reason that the dispute in question has evoked considerable controversy. The dispute pertains to the use of mark ‘NANDHINI’. The respondent herein, which is a Cooperative Federation of the Milk Producers of Karnataka, adopted the aforesaid mark ‘NANDINI’ in the year 1985 and under this brand name it has been producing and selling milk and milk products. It has got registration of this mark as well under Class 29 and Class 30. The appellant herein, on the other hand, is in the business of running restaurants and it adopted the mark ‘NANDHINI’ for its restaurants in the year 1989 and applied for registration of the said mark in respect of various foodstuff items sold by it in its restaurants. The respondent had opposed the registration and the objections of the respondent were dismissed by the Deputy Registrar of the Trade Mark who passed orders dated August 13, 2007 allowing the registration of the said mark in favour of the appellant.

2. We may note at this stage itself that the mark used by the appellant is objected to by the respondent on the ground that it is deceptively similar to the mark of the respondent and is likely to deceive the public or cause confusion. According to the respondent, the appellant could not use the said mark which now belongs to the respondent inasmuch as because of its long and sustained use by the respondent, the mark ‘NANDINI’ is held to have acquired a distinctive character and is well-known to the public which associates ‘NANDINI’ with the respondent organization. Therefore, according to the respondent, it has exclusive right to use the said mark and any imitation thereof by the appellant would lead the public to believe that the foodstuffs sold by the appellant are in fact that of the respondent. When these objections were rejected by the Deputy Registrar and registration granted to the appellant, the respondent approached the Intellectual Property Appellate Board (for short, ‘IPAB’), Chennai by filing appeal with the prayer that the registration given by the Deputy Registrar, Trade Mark in favour of the appellant be cancelled. These appeals of the respondent were allowed by the IPAB vide common order dated 4th October, 2011 and the writ petitions filed by the appellant there against have been dismissed by the High Court vide impugned order dated 2nd December, 2014, thereby confirming the order of the IPAB and, in the process, accepting the plea of the respondent therein.

3. Before we proceed further, it is pertinent to mention at this stage that the milk and milk products, which are sold by the respondent under the trade mark of ‘NANDINI’, fall under Class 29 and Class 30 as per classification under Schedule IV to the Trade Marks Rules, 2002. On the other hand, various kinds of foodstuffs sold by the appellant in its restaurants also fall under Class 29 and 30 as well as other Classes.

4. For the sake of clarity and comparison, we may also, at this stage itself, give the representation of competing marks of the appellant as well as respondent, which is as under :-

“Image”

5. Before we proceed to state the arguments of the learned counsel for appellant and rebuttal thereof by the respondent, it would be necessary to have a brief discussion in respect of the orders passed by the Deputy Registrar of Trade Marks, IPAB and the High Court.

ORDER OF THE DEPUTY REGISTRAR, TRADE MARKS:

6. This order discloses that the appellant herein had moved the applications for registration of trade mark ‘NANDHINI DELUXE WITH LOGO (Kannada)’’ in respect of meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, milk